Coretell Pty Ltd v Australian Mud Company Pty Ltd

Coretell Pty Ltd (the appellants) appealed against the decision of the primary judge (Kiefel J) in the Federal Court of Australia, which found that Australian Mud Company Pty Ltd (the respondents) had infringed the appellants’ patents and were liable for damages. The patents in question related to an orienting tool for core samples. The appeal involved multiple grounds, primarily concerning the date from which the respondents could be liable for patent infringement, the validity of the patents, and the assessment of costs.

The legal issues revolved around the interpretation of the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth) in relation to the date from which relief for infringement could be claimed, the validity of the patents based on their priority dates, and the principles governing the assessment of costs. Specifically, the court had to determine whether the relief for infringement could commence from the date of the patents or the date of their grant, whether the patents were validly based on the disclosure in the provisional application, and whether the primary judge correctly exercised his discretion in awarding costs.

The court held that the correct date from which the respondents could be liable for infringement was the date of the grant of the patents, not the date of their filing. This conclusion was based on the language of the Act and the statutory provisions that allow a patentee to commence infringement proceedings upon the grant of a standard patent. The court also found that the primary judge correctly applied the test for external fair basis and determined that the patents were validly based on the disclosure in the provisional application. Additionally, the court rejected the appeal concerning the novelty-defeating prior use of the invention and upheld the primary judge’s findings.

The court allowed the appeal in part, setting aside the declarations and directions made by the primary judge and substituting new declarations and directions. The court ordered an inquiry into the profits or damages and additional damages in respect of the respondents' infringement of the patents and mandated the respondents to provide specified documents. The appellants were ordered to pay ninety percent of the respondents' costs of the appeal. The orders regarding costs were suspended to allow for further submissions on the costs issue.